Ex Parte Bertrand et al

Board of Patent Appeals and Interferences

Jul 31, 2012

11605936 (B.P.A.I. Jul. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/605,936 11/29/2006 William J. Bertrand 151P23241USU1 5563
54228 7590 08/01/2012
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
MARCETICH, ADAM M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
08/01/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM J. BERTRAND, LORI C. SPECKMAN,
JAVIER J. REVELES, and ANDY R. KIEHL
__________

Appeal 2011-009928
Application 11/605,936
Technology Center 3700
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
implantable shunt. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses that “a common treatment for
hydrocephalus patients has been the cerebrospinal fluid shunt. A standard
shunt consists of the proximal (upstream) catheter, a valve and a distal
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Application 11/605,936

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(downstream or discharge) catheter” (Spec. 1-2, ¶ 5). The Specification
discloses an implantable shunt system that “utilizes the properties of the
catheters to improve the expected function of the shunt by providing a
higher or lower resistance to the flow through the shunt and reducing the
effect of pulsations of intracranial pressure on the shunt system” (id. at 2-3,
¶ 9). The Specification discloses that “[i]n one embodiment, the resistance
to flow and pulsations is controlled at least in part by changing the length of
the tubing” (id. at 3, ¶ 10) and that “[o]ne such embodiment can include
markings on the catheter that provide the resistance to flow that would be
obtained if the catheter were trimmed at that point” (id. at 8, ¶ 34).
Claims 2, 3, 5-7, 9-11 and 13-16 are on appeal. Claim 15, the only
independent claim, reads as follows:
15. An implantable shunt, comprising:
one or more catheters having a resistance to fluid flow, a catheter end
and indicia disposed at locations along the one or more catheters, the indicia
being indicative of a resistance to fluid flow should the catheter end be
coincident with the indicia at a particular location along the one more [sic]
or more catheters.

The Examiner has rejected claims 2, 3, 5-7, 9-11 and 13-16 under 35
U.S.C. § 103(a) as obvious in view of Stuart
1
and Børgesen.
2
The Examiner
finds that Stuart discloses catheters having a resistance to fluid flow, an end,
and indicia disposed at locations along the catheters (Answer 3), but “the
indicia only show linear positions along a catheter,” rather than fluid
resistance (id. at 3-4). The Examiner finds that Børgesen discloses a

1
Stuart et al., US 5,114,401, issued May 19, 1992.
2
Børgesen, US 6,283,934 B1, issued Sept. 4, 2001.
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cerebrospinal fluid “shunt comprising a brain ventricle catheter and drain …
and calls for using Poiseuille’s Equation to calculate the length of a catheter
suitable for providing needed resistance” (id. at 4). The Examiner finds that
“Børgesen suggests selecting a catheter length that selects appropriate flow
resistance” (id.). The Examiner finds that each marking on Stuart’s catheter
“represents a length along the catheter. Each length necessarily corresponds
to a single fluid resistance” (id. at 4-5), and concludes that “Børgesen
provides motivation to show the fluid resistance, to match fluid resistance to
a patient” (id. at 5).
Appellants argue that Stuart discloses only a catheter and guidewire
with indicia that are used to help position the catheter (id. at 11) and, while
Børgesen discloses a relationship between flow resistance and catheter
length, it does not “disclose or suggest any indicia related to any aspect of
flow resistance” (id.). Thus, Appellants argue that the cited references
would not have made obvious the claimed implantable shunt (id. at 11-12).
Appellants also argue that the indicia on the claimed shunt have a functional
relationship with the shunt and cannot be dismissed as merely printed matter
(id. at 13-14).
We agree with Appellants that the indicia on the claimed shunt, like
the markings on the measuring cup at issue in In re Miller, 418 F.2d 1392
(CCPA 1969), are functionally related to the claimed product and therefore
are a limitation entitled to patentable weight.
We also agree with Appellants that the Examiner has not adequately
shown that Stuart and Børgesen would have made obvious an implantable
shunt that comprises a catheter with indicia that indicate flow resistance.
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Børgesen discloses “a cerebrospinal fluid shunt system comprising brain
ventricle catheter means for insertion into the brain ventricle … [and] sinus
sagittalis catheter means for insertion into the sinus sagittalis for feeding …
cerebrospinal fluid into [the] sinus sagittalis” (Børgesen, col. 3, ll. 59-64),
and a “shunt main body means” between the two catheters (id. at col. 3,
ll. 64-67).
Børgesen discloses that a “tubular flow passage restricting means [is]
defined within said shunt main body …, said tubular flow passage restricting
means defining a system total resistance to flow of 8-12 mm Hg/ml/min” (id.
at col. 4, ll. 2-7). Børgesen discloses that, in a preferred embodiment,
the internal radius (R) of the tubular flow passage restricting
means is less than about 0.20 mm and the flow[ ]restricting
part of the tubular flow passage restricting means has a length
(L) which is calculated according to the law of Hagen-Poiseulle
… to provide a resistance to CSF-outflow through the shunt
which is similar to the normal resistance, i.e. 8-12 mm
Hg/ml/min.
(Id. at col. 5, ll. 21-29, emphasis added.)
Børgesen provides drawings of embodiments of its cerebrospinal fluid
(CSF) shunt in its Figures 1-7. In each of these embodiments, the flow
regulating tube (element 3; see id. at col. 8, ll. 2-4) is an integral part of the
shunt main body, and does not include any part of the brain ventricle
catheter or sinus sagittalis catheter (which connect to the shunt main body at
elements 1 and 7, respectively; see id. at col. 7, l. 67 and col. 8, l. 16). Thus,
although Børgesen discloses that the length of the flow passage restricting
means affects the flow resistance in the shunt, it does not suggest adjusting
the length of a catheter in order to provide a desired flow resistance. Rather,
it discloses shunts that include a shunt main body that provides a given flow
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resistance that is predetermined based on, among other things, the length of
the flow regulating tube in the shunt main body.
Stuart discloses “an apparatus … for the insertion and replacement of
central venous catheters over a guidewire … [that] includes two parts: a
guidewire having markings thereon; and a translucent catheter” (Stuart, col.
4, ll. 23-28). Stuart discloses that the guidewire markings “are used to
maintain the position of the guidewire … once inserted into a patient’s
cardiovascular system” (id. at col. 4, ll. 26-32) and that the “catheter … has
uniformly spaced markings 22 positioned along its length” (id. at col. 4, ll.
57-58).
We agree with Appellants that the Examiner has not adequately
explained how Stuart’s disclosure of catheters with markings that are useful
for positioning of the catheters would have made it obvious to a person of
ordinary skill in the art to modify Børgesen’s CSF shunt to include a catheter
with indicia that indicate flow resistance, given that Børgesen’s CSF shunt is
designed to provide a predetermined flow resistance to CSF-outflow using a
flow regulating tube in the shunt main body itself, and does not disclose that
the catheters that connect to its shunt contribute to the flow resistance.
Thus, we reverse the rejection of independent claim 15 and dependent
claims 2, 3, 5-7, 9-11, 13, 14, and 16.
SUMMARY
We reverse the rejection of claims 2, 3, 5-7, 9-11 and 13-16 under 35
U.S.C. § 103(a).

REVERSED
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